Ex Parte Schneider

Board of Patent Appeals and Interferences

Aug 30, 2010

10711102 (B.P.A.I. Aug. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/711,102 08/23/2004 Joseph C. Schneider 14715 (ITWO:0322) 5101
52145 7590 08/30/2010
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
PASCHALL, MARK H
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
08/30/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH C. SCHNEIDER
____________________

Appeal 2009-006198
Application 10/711,102
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, STEVEN D. A. MCCARTHY, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006198
Application 10/711,102
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
22 and 24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to multi-position head plasma torch. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A plasma cutting torch comprising:
a torch body having a handle which extends from a first
end to a second end, the first end being fixed with respect to the
second end; and
a torch head having a restricted pivotable connection to
the torch body and configured to generate a cutting arc at a
plurality of angles relative to the torch body.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stuart
New
Sorkin
US 5,338,917
US 5,916,465
US 6,380,508
Aug. 16, 1994
Jun. 29, 1999
Apr. 30, 2002

REJECTIONS
Claims 1-22, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sorkin, New, and Stuart. Ans. 3.
Claims 1-22, and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sorkin and Stuart. Ans. 4.

Appeal 2009-006198
Application 10/711,102
3
OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have determined that the applied prior art establishes the prima facie
obviousness of claims 1, 2, and 6-9. Likewise we have determined that the
applied prior art does not establish the prima facie obviousness of claims 3-
5, 10-22 and 24. Our reasons follow.
The following constitutes our findings of fact with respect to the
scope and content of the prior art and the differences between the prior art
and the claimed subject matter. Sorkin teaches the use of a plasma cutting
torch for cutting a tendon of a post-tensioned concrete structure. Col. 1, l.
64 - col. 2, l. 12; col. 3, ll. 25-40. The cutting tool has a head and a nozzle
extending transverse to the longitudinal axis of the handle. Col. 5, ll. 30-31.
The head 24 is rigidly fastened to the handle 22. See Col. 7, ll. 1-8. Sorkin
differs from the claimed subject matter in that the head is rigidly connected
to the handle, i.e., it is not pivotable.
New discloses a tungsten inert gas torch. Col. 2, ll. 7-13. The body of
New, which constitutes the handle, is made of a front section 52 and a rear
section 54. These sections cooperate with the tubular swivel housing to
permit the head of New to pivot via the ball and socket spherical end 78.
Col. 4, ll. 52-65. While the head 70 of New is pivotable, New differs from
the claimed subject matter in that the torch body does not have a first end
fixed with respect to a second end.
Stuart discloses a metal inert gas (MIG) welding system. Col. 4, ll.
35-42. Figure 11 is an enlarged sectional view of a ball and socket joint 100
which connects the torch head to the handle. Col. 9, ll. 1-22. A wave
washer assembly is provided with the collet 206 to release the ball and
Appeal 2009-006198
Application 10/711,102
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socket joint 100 and allow the head to pivot with respect to the rigid handle.
Col. 9, ll. 23-42. Stuart differs from the claimed subject matter of claim 1
only in the fact that it discloses an MIG torch rather than a plasma cutting
torch.
In view of these teachings of the prior art, it is our conclusion that the
prior art establishes the prima facie obviousness of claims 1, 2 and claims 6-
9 that depend therefrom. In our view, New suggests a pivotable head on the
plasma cutting torch of Sorkin. This is merely the simple substitution of one
known element for another to obtain predictable results. Stuart further
teaches that the handle of a torch can be made as a one piece assembly rather
than, as New teaches, of two relatively movable body parts. Thus we find
that claim 1 is prima facie obvious over the combined teachings of Sorkin,
New and Stuart.
Moreover, claim 1, and claims 2 and 6-9 that depend therefrom, are
prima facie obvious over the teachings of Sorkin and Stuart when considered
without New. Stuart clearly teaches a pivotable head which would be a
simple substitution for the rigid head in Sorkin. This simple substitution of
one known element for another, to obtain predictable results, would be prima
facie obvious. Therefore claims 1 and claims 6-9 which depend therefrom
are prima facie obvious from the combined teachings of Sorkin and Stuart.
Appellant argues that the rejections based on the combined teachings
of Sorkin, New and Stuart and the combined teachings of Sorkin and Stuart
are contradictory. We disagree. As noted above, we have failed to find any
contradiction in the rejections as laid out by the Examiner. On page 4 of the
Brief, Appellant argues that the different purposes of the torches are
indicative of nonobviousness. However, we are in agreement with the
Examiner that one of ordinary skill in the art understands the relationship
Appeal 2009-006198
Application 10/711,102
5
between welding and cutting using plasma and an electric arc. We also note
that a strict requirement for motivation is inimical to the Supreme Court’s
standard on obviousness. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
402 (2007). On pages 6 and 7 Appellant argues that the devices cannot be
physically combined and would have a duplicative structure if so combined.
However, “it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). “Combining the teachings of
references does not involve an ability to combine their specific structures.”
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (emphasis omitted).
Appellant also argues that there is no rationale or articulated reasoning with
rational underpinnings supporting the Examiner’s rejection. As noted above,
we have found the necessary rationale. Appellant argues that there would be
two structures that allow pivoting if Sorkin, New and Stuart were combined.
However, as noted above, only one pivoting structure, suggested by either
New or Stuart, would be substituted by one of ordinary skill. And finally,
Appellant argues that none of the applied prior art teaches restricted pivoting
as called for in claim 1. New and Stuart clearly disclose a restriction on the
amount of pivoting that the ball and socket can undergo. For example,
Figures 6-8 of Stuart disclose the range of motion permitted by Stuart’s ball
and socket joint. Therefore, we are in agreement with the Examiner that the
applied prior art shows the restricted pivotal connection called for in claim 1.
Turning to a consideration of claims 3-5 and 10 on appeal, we agree
with the Appellant that the applied prior art does not establish the prima
facie obviousness of a ratcheted connection between a torch head and a torch
body or handle, nor does the prior art suggest predefined set points for the
pivotable connection. Accordingly, the subject matter of claims 3-5 and 10
Appeal 2009-006198
Application 10/711,102
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and claims 11-16 that depend therefrom are not prima facie obvious from the
applied prior art.
Turning to claim 17 on appeal, we note that, as disclosed, the
pivotable connection of Appellant’s invention allows movement of the head
“two-dimensionally” as disclosed in paragraph 31 of the Specification. As
we understand the term, “two-dimensionally” means in a single plane which,
in this instance, limits the rotation of the claimed torch head to a single axis.
Since there are three axes in space, we understand the claim to call for a
connection which prevents movement along two axes and permits it along
one pivot axis. Since New and Stuart disclose ball and socket joints which
permit movement along more than one axis, the applied prior art does not
establish the prima facie obviousness of the subject matter of claim 17.
Accordingly, we will not affirm the 35 U.S.C. § 103 rejection of claims 17-
22 and 24.

SUMMARY
The rejection of claims 1, 2, and 6-9 under 35 U.S.C. § 103 as
unpatentable over Sorkin in view of New and Stuart is affirmed.
The rejection of claims 3-5, 10-22, and 24 under 35 U.S.C. § 103 as
unpatentable over Sorkin in view of New and Stuart is reversed.
The rejection of claims 1, 2, and 6-9 under 35 U.S.C. § 103 as
unpatentable over Sorkin in view of Stuart is affirmed.
The rejection of claims 3-5, 10-22, and 24 under 35 U.S.C. § 103 as
unpatentable over Sorkin in view of Stuart is reversed.

Appeal 2009-006198
Application 10/711,102
7
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

nlk

FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON TX 77269-2289